1. Patent Cases and Trends MM 350 Intellectual Property Law and New Media

2. Important features from Traditional cases

3. BILSKI ET AL. v. KAPPOS, No. 08–964. Argued November 9, 2009—Decided June 28, 2010 BILSKI ET AL. v. KAPPOS, No. 08–964. Argued November 9, 2009—Decided June 28, 2010 http://www.supremecourt.gov/opinions/09p df/08-964.pdf http://www.supremecourt.gov/opinions/09p df/08-964.pdf Business method patent on a method of hedging risk in commodities trading By only 5-4, the USSC upholds the validity of business methods patents and denies one to Bilski

4. Majority Opinion: A claimed process is patent eligible if: – (1) it is tied to a particular machine or apparatus, or – (2) it transforms a particular article into a different state or thing. The patent at issue failed the test and therefore was not patent eligible.

5. Tivo v. Echostar (Fed. Cir. 2008) Tivo sues Echostar for infringing the ‘ 389 patent. – Hardware and software claims relating to DVR ’ s Jury verdict in favor of Tivo – $74 million!!! Lost profits and reasonable royalties – Permanent injunction

6. Tivo v. Echostar (Fed. Cir. 2008) Echostar appeals to Federal Circuit: – Reverses and remands on hardware claims – Affirms software claims – Affirms damages award – Affirms permanent injunction – which had been stayed pending appeal

7. Tivo v. Echostar 2008: USSC refused the case. 2009: trial judge fined Echostar an additional 103 million, plus interest.

8. Tivo-more 2009: Tivo wins another 200M. against Dish Network—roughly, same claims 2009: Tivo sues AT&T....BUT – Microsoft sues Tivo (on two patents) 2009: Tivo sues Verizon….. BUT - Motorola, who supplied the sets to Verizon, sues TIVO for infringement

9. Microsoft v. TomTom 2:09-cv-00247 (W. Dist. Wash.) Patent No.:US 6,175,789 Bl Date of Patent: *Jan.16,2001 VEHICLE COMPUTER SYSTEM WITH OPEN PLATFORM ARCHITECTURE Inventors: Richard D. Beckert, Lake Stevens; Mark M. Moeller, Bellingtham; William S. Wong, Redmond, all of WA (US) Assignee: Microsoft Corporation, Redmond, WA (US) Filed: Sep. 10, 1999

10. Microsoft v. TomTom 2:09-cv-00247 (W. Dist. Wash.) ABSTRACT A vehicle computer system has a housing sized to be mounted in a vehicle dashboard or other appropriate location. A computer is mounted within the housing and executes an open platform, multi-tasking operating system. The computer runs multiple applications on the operating system, including both vehicle-related applications (e.g., vehicle security application, vehicle diagnostics application, communications application, etc.) and non-vehicle-related applications (e.g., entertainment application, word processing, etc.). The applications may be supplied by the vehicle manufacturer and/or by the vehicle user.

11. Microsoft v. TomTom 2:09-cv-00247 (W. Dist. Wash.) Microsoft alleged: – TomTom's navigation products, which use the open source Linux kernel, infringe on a handful of Microsoft's patents. – Two of the patents cited by Microsoft cover legacy compatibility features in Microsoft's FAT filesystem, support for which is implemented in Linux. TomTom responds: – Countersues Microsoft for infringing its patents for various automobile navigation systems.

12. Microsoft v. TomTom 2:09-cv-00247 (W. Dist. Wash.) Case filed on 2/25/09 Case voluntarily dismissed on 4/2/09 Why?

13. MICROSOFT CORP. v. I4I LIMITED PARTNERSHIP ET AL. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT MICROSOFT CORP. v. I4I LIMITED PARTNERSHIP ET AL. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT Over XML used in WORD No. 10–290. Argued April 18, 2011—Decided June 9, 2011 Microsoft lost at the trial level as well as multiple appeals. 200M judgment, and some fines for calling i41 a patent troll during the case (had enjoined them from selling WORD for a short time) Microsoft attempted to get the USSC to lower the standard for challenging a patent in cases in which the particular aspect within the patent had not been challenged as prior art at the time of the filing. – Wanted “preponderance of evidence” as opposed to “clear and convincing evidence” USSC said “no thanks, the high standard is just fine

14. Apple v. Samsung Apple wins injunction in US, in both Europe and U.S. for patent infringement. Jury awards Apple 1 B$+ – http://techcrunch.com/2012/08/24/apple-wins- patent-ruling-as-jury-finds-samsung-infringes/ – Samsung only wins in Japan

15. Top Trends In Patents Patent Reform – America Invents Act The rise of the patent troll No insurance or indemnity for patent infringement claims Patentability of isolated human genes

16. Patent Reform – America Invents Act Signed into law 9-16-11 Major provision – Moves from “first to invent” to “first inventor- to-file” – priority now based on filing date. Criticism: A first inventor-to-file system may impede the small, unfunded (or underfunded) inventor

17. The Rise of the Patent Troll What is a patent troll? – Parties who file aggressive patent lawsuits – Other characteristics: Often purchase patents from other companies in liquidation Often have no intent to manufacture the patented product Cast a wide net in litigation to include parties who do not copy the invention – Other name: Non-Practicing Entities (“NPE”)

18. The Rise of the Patent Troll YearNumber of “Troll” Cases 20114,508 20103,854 20092374 20082065

19. The Rise of the Patent Troll What allows trolls to sue? – Patentee can sue for infringement Includes successor No requirement that patentee make use or sell the invention What type of relief? – After eBay case, difficult to get injunction – Instead, a “reasonable royalty”

20. The Rise of the Patent Troll Academic debate: – Pros: NPE acts as technology broker and facilitates a robust technology marketplace. NPE makes funding available to start-up companies and their backers. – Cons: Trolls game the system. They are not interested in inovation. They pursue the value of their inventions along with the value of investments made by defendants.

21. The Rise of the Patent Troll Troll Strategies: – File in “rocket docket” venues (e.g. Texas, Delaware, Illinois) – Send onerous “document preservation” letters – Try to settle with smaller companies first to build up litigation war chest Divide and conquer

22. No Insurance or Indemnity for Patent Infringement Claims Insurance carriers reluctant to underwrite cost of indemnity and defense in patent claims. Why? – $$$$$: patent awards can be large and are increasing; litigation costs are rising. – Underwriting (estimates) are difficult to make, so it’s tough to set premiums (and everyone knows that insurance companies hate to lose $).

23. No Insurance or Indemnity for Patent Infringement Claims Litigation Expense

24. No Insurance or Indemnity for Patent Infringement Claims Parties refuse to assume the responsibility to indemnify and defend other parties for third party claims arising out of patent infringement

25. Patentability of Isolated Human Genes Association for Molecular Pathology v. Myriad Genetics, Fed. Cir. 8-16-2012 – Patent composition claims over “isolated” human genes – BRCA1 and BRCA2 – are patent eligible Non-naturally occurring compositions of matter – Method claims directed to “comparing” or “analyzing” DNA sequences are patent eligible

26. Australian court says genes can be patented Feb 15 2013 An Australian federal judge has ruled that because the BRCA1 cancer gene has been "isolated" from the human body, it's appropriate to grant a patent on it. "The disputed claims extend only to naturally occurring DNA and RNA which have been extracted from cells obtained from the human body and purged of other biological materials with which they were associated," wrote the judge.ruled That's the exact opposite of the finding by the judge who heard the US case, who agreed with various doctors' groups and the ACLU that the whole idea of "isolating" genes really doesn't change the calculus. The patent holder was effectively demanding a monopoly on any doctors who viewed the gene, and that was unacceptable. The genetics company lost at district court, won at the patent-friendly US Court of Appeals for the Federal Circuit, and now has its case headed to the US Supreme Court.lostwoncaseheaded The patent-holder in the case is the same one that claims to own the BRCA1 gene in the US, Utah-based Myriad Genetics. (Hat tip to Techdirt.) The case was brought by an Australian advocacy group, Cancer Voices Australia. Today's Australian ruling could be appealed to a three-judge panel, which would have the final say unless the case went to the High Court of Australia, the equivalent of the US Supreme Court.TechdirtCancer Voices AustraliaHigh Court of Australia The BRCA1 and BRCA2 genes are important because they can predict a woman's likelihood of contracting breast or ovarian cancer. In the US, the Myriad test can cost upwards of $3,000 and isn't always covered by insurance. In Canada, where Myriad has threatened but failed to enforce its patent, doctors have been able to offer test results for one-third of the US cost, and get results far quicker.threatened The politics of these gene patents in Australia differ from the US. One reason the ACLU targeted Myriad in the US was because of Myriad's vigorous enforcement efforts. The company sent cease-and-desist letters to researchers and threatened lawsuits. In Australia, Myriad outsourced its patent to a Melbourne company, which "gifted" the patent rights to many health care institutions and promised not to demand royalties for testing.enforcementoutsourced

27. Human Genes May Not Be Patented, US Supreme Court Ruled Today Human Genes May Not Be Patented, US Supreme Court Ruled Today 13 Jun 2013 Human Genes May Not Be Patented, US Supreme Court Ruled Today The US Supreme Court ruled today that naturally-occurring human genes may not be patented Writing for a unanimous court, Justice Clarence Thomas explained that a naturally-occurring DNA segment is a product of nature, it is not a human invention, and is thus not eligible for patent just because scientists isolated it. but a gene that is manipulated to create something that does not exist in nature may be patented, because it is an invention. if a gene is manipulated in a way that it becomes something unnatural, something we cannot find in nature, then it is an invention and is eligible for patent protection.

28. Though it looked like the company “lost,” they did not. The question has to be settled for every aspect of every gene-related patent The main question for the Supreme Court justices in this case "Association for Molecular Pathology v. Myriad Genetics No. 12-398" was whether the genes the company isolated are human-made inventions or products of nature. A product of nature is not eligible for patent protection, while a human-made invention is."Association for Molecular Pathology v. Myriad Genetics No. 12-398" In a communiqué today, Myriad Genetics Inc. wrote that the ruling has given it 500 valid and enforceable claims in 24 different patents conferring strong patent protection for its BRAC Analysis test. Several of the company's unchallenged claims are method claims applying knowledge regarding the BRCA 1 and BRCA 2 genes, which were not at issue in this case. However, the Court highlighted Judge Bryson's opinion that "[a]s the first party with knowledge of the [BRCA1 and BRCA2] sequences, Myriad was in an excellent position to claim applications to that knowledge.” It’s difficult to tell, in this (and many cases) which is the “battle” and which is the “war.”